Ex Parte Mampaey

Patent Trial and Appeal Board

Mar 8, 2017

13381217 (P.T.A.B. Mar. 8, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/381,217 03/15/2012 Marcel Mampaey LUTZ 201357US01 5487
48116 7590 03/10/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor LE, RONG
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
03/10/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL MEMPAEY
Appeal 2016-005929
Application 13/381,217
Technology Center 2400
Before JOHN A. JEFFERY, ERIC S. FRAHM, and
KIMBERLY McGRAW, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—9, 12, and 13. Claims 10 and 11 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s obviousness rejection of claims 1—7, 12,
and 13, and reverse the obviousness rejection of claims 8 and 9 pro forma.
We also enter a new ground of rejection for claims 8 and 9 under 35 U.S.C.
§ 112(b) as being indefinite.
Appeal 2016-005929
Application 13/381,217
Exemplary Claims
Claims 1, 6, and 8, which are representative of the issues under
appeal, read as follows:
1. Method for provisioning a multimedia service to a
multimedia rendering device by a multimedia application
server, said multimedia application server, being coupled to
said rendering device over a communication network, wherein
said method further comprises:
a. determining at least one additional multimedia
service associated with said multimedia service provisioned by
said multimedia application server, to said rendering device;
b. selecting an additional multimedia service of said at
least one additional multimedia service by a communications
device associated with said multimedia service provisioned to
said rendering device or by said rendering device;
presenting the additional multimedia service on the
communication device; and
personalizing the additional multimedia service
according to a user's preferences.
6. Multimedia system for provisioning multimedia
services to a multimedia rendering device, said multimedia
system comprising a multimedia application server for
provisioning said multimedia service to said multimedia
Rendering device, said multimedia application server being
coupled to said rendering device over a communication
network, wherein said system further comprises:
one or more processors programmed to:
determine an additional multimedia service associated
with said multimedia service; and
select an additional multimedia service of said at least
one additional multimedia service by a communications device
associated with said multimedia service provisioned to said
rendering device or by said rendering device;
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wherein the additional multimedia service is presented on
the communications device;
wherein the additional multimedia service is personalized
according to a user’s preferences.
8. An application server, for use in Multimedia
system according to claim 6 wherein said one or more
processors is further programmed to:
determine an additional multimedia service associated
with said multimedia service; and
select an additional multimedia service of said at least
one additional multimedia service by a communications device
associated with said multimedia service provisioned to said
rendering device;
wherein the additional multimedia service is personalized
according to the user’s preferences.
App. Br. 14—16 (emphases added).
Examiner’s Rejection
The Examiner rejected claims 1—9, 12, and 13 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Robotham (US
2009/0019474 Al; published Jan. 15, 2009), Krikorian (US 7,877,776 B2;
issued Jan. 25, 2011, filed June 7, 2005), and Matsubayashi (US
2010/0242070 Al; published Sept. 23, 2010, filed Mar. 18, 2009). Final
Act. 7-18.
Appellant’s Contentions
(1) Appellant primarily contends (App. Br. 5—6; Reply Br. 3—5) that
the Examiner erred in rejecting claims 1—9, 12, and 13 under
35 U.S.C. § 103(a) over the combination of Robotham, Krikorian, and
Matsubayashi based on an interpretation that claims 1, 6, and 12 require the
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“communications device” be separate and different from the “multimedia
rendering device,” and as a result, the combination fails to teach or suggest
“presenting the additional multimedia service on the communication device”
as recited in independent claim 1. Appellant makes similar arguments as to
remaining independent claims 6 (App. Br. 7—9; Reply Br. 3—5) and 12 (App.
Br. 10-12; Reply Br. 3-5).
(2) Appellant contends (App. Br. 7; Reply Br. 5—6) that the Examiner
incorrectly relies upon Robotham’s mouse as teaching recited
communications device recited in claim 3, which among other things,
functions to make a request.
(3) Appellant argues (App. Br. 9; Reply Br. 6—7) that the Examiner
incorrectly reads out the preamble language of “application server” recited
in claim 8, and as a result the Examiner erred in rejecting claim 8 for the
additional reason that the combination fails to teach or suggest the
application server as recited in claims 6and 8.
(4) Appellant contends (App. Br. 9—10; Reply Br. 7) that Robotham
fails to teach or suggest that the additional multimedia service is provisioned
to the communication device as recited in claim 9.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (App. Br. 5—13)
and the Reply Brief (Reply Br. 3—8), the following issues are presented on
appeal:1
1 Because independent claims 1, 6, and 12 contain similar limitations drawn
to a multimedia service provisioning method, multimedia system, and
communication device for use in a multimedia system, namely
personalization and presenting multimedia service according to a user’s
preferences, and Appellant presents similar arguments as to claims 2, 4—7,
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(1) Did the Examiner err in rejecting claims 1,2, 4—7, 12, and 13 as
being obvious because (i) the Examiner improperly interpreted
representative claim 1 as not actually requiring two separate and different
devices, and thus the “multimedia rendering device” and “communications
device” cannot be met by a disclosure of one device for performing both
recited functions, and (ii) the combination fails to teach or suggest the
limitation at issue of “presenting the additional multimedia service on the
communication device” as recited in representative independent claim 1?
(2) Did the Examiner in rejecting dependent 3 claim as being obvious
because Robotham, and thus the combination of Robotham, Krikorian, and
Matsubayashi, fails to teach or suggest “a request of a communications
device associated with said multimedia service” as claimed?
(3) Did the Examiner err in rejecting claims 8 and 9 as being obvious
because the Examiner improperly interpreted claims 8 and 9 as not actually
requiring the “application server” recited in the preamble?* 2
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 5—13) and the Reply Brief (Reply
Br. 3—8) that the Examiner has erred, as well as the Examiner’s (i) remarks
12, and 13 as presented for claim 1 (see App. Br. 7—12; Reply Br. 3—5), we
select claim 1 as representative of the group of claims consisting of claims 1,
4—7, 12, and 13. Claims 3, 8, and 9 are separately argued (App. Br. 9; Reply
Br. 6-7).
2 We do not reach the issue of whether the combination fails to teach or
suggest the limitation of an “application server” as recited in claims 8 and,
because a construction of claims 8 and 9 is not possible for reasons provided
infra.
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in the Advisory Action, pages 2—5, mailed August 20, 2015, and (ii)
response to Appellant’s arguments in the Examiner’s Answer found at pages
3—8. We disagree with Appellant’s contentions.
With regard to representative independent claim 1 and dependent
claim 3, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 7—11), as
well as the remarks at pages 2—5 of the Advisory Action mailed August 20,
2015, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see Ans. 3—7). We concur
with the conclusions reached by the Examiner with regard to the
obviousness of independent claims 1, 6, and 12 in view of the combination
of Robotham, Krikorian, and Matsubayashi.
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, YU F.3d 1048, 1053—54
(Fed. Cir. 1997).
Representative Independent Claim 1
Representative independent claim 1 recites “a multimedia application
server” for “provisioning a multimedia service to a multimedia rendering
device” over a communication network (preamble), and using a
“communications device associated with said multimedia service”
(paragraph b). Then, the additional multimedia service is presented “on the
communication device” (claim 1, paragraph following paragraph b).
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Nothing in claim 1 prevents or limits the recited “multimedia rendering
device” (claim 1, preamble) and “communications device” (claim 1,
paragraph b) from being the same device or part of the same device. In fact,
claim 1 actually recites the two devices have something in common: the
multimedia rendering device has a multimedia service provisioned to it
(claim 1, preamble), and the communications device is “associated with said
multimedia service provisioned to said rendering device or by said rendering
device” (claim 1, paragraph b (emphasis added)).
In this light, we agree with the Examiner (Ans. 3—6) that the claims on
appeal do not actually require or contain any limitations requiring the
communications device be a device separate from the multimedia rendering
device. Therefore, we agree with the Examiner’s findings (Final Act. 7—8;
Ans. 4—6; Adv. Act. 2—3) with regard to Robotham (see, e.g., Fig. 1; 141) as
teaching or suggesting a communications device and multimedia rendering
device (consumer terminals 5-1, 5-2, 5-3) and a multimedia application
server (i.e., local server 20), as well as selection of an additional multimedia
service (Final Act. 8; Ans. 4—5; Robotham 141).
Because we also agree with the Examiner that Krikorian teaches
presentation of a multimedia service (Final Act. 8—9; Ans. 6) and
Matsubayashi teaches personalization according to a user’s preferences
(Final Act. 9; Adv. Act. 3), we also concur with the Examiner’s conclusion
of obviousness as to the subject matter of representative claim 1.
In view of the foregoing, we sustain the Examiner’s rejection of
representative independent claim 1, as well as claims 2, 4—7, 12, and 13
grouped therewith.
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Dependent Claim 3
With regard to claim 3, we agree with the Examiner (Final Act. 10—
11; Ans. 7) that Robotham teaches a mouse click which meets the recited
request. Appellant’s arguments (App. Br. 7) that the recited communication
device receives and displays the additional multimedia service, and therefore
Robotham’s mouse can neither perform the recited functions of receiving
and displaying, nor teach the claimed communication device, are
unpersuasive. The Examiner is not merely relying on Robotham’s mouse as
teaching a communications device. Instead the Examiner relies upon
Robotham’s laptop (which includes a mouse), as the communications device
— one which is fully capable of receiving, displaying, and requesting
information as known by one of ordinary skill in the art at the time.
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of claim 3.
Claims 8 and 9
With regard to claim 8, Appellant argues (App. Br. 9; Reply Br. 6)
that Robotham allows a viewer to select an advertisement or product, but
“there is no mention of an application server” as required by claim 8.
Appellant contends (Reply Br. 7) that the preamble of claim 8 is drawn to a
structure that includes an application server. With regard to claim 9, which
depends from claim 8, Appellant argues (App. Br. 9—10; Reply Br. 7) that
Robotham fails to teach or suggest provisioning a service as recited. For the
reasons expressed in this opinion (infra), claims 8 and 9 are indefinite. A
prior art rejection cannot be sustained if the hypothetical person of ordinary
skill in the art would have to make speculative assumptions concerning the
meaning of claim language. See In re Steele, 305 F.2d 859, 862 (CCPA
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1962). Claims 8 and 9 on appeal must be reasonably understood without
resorting to speculation. Here, we would require such speculation to
construe the claims. Therefore, the prior art rejections must fall, pro forma,
because they necessarily are based on speculative assumption as to the
meaning of the claims. It should be understood, however, that our decision
in this regard is based solely on the indefiniteness of the claimed subject
matter and does not reflect on the adequacy of the prior art evidence applied
in support of the rejection. We do not reach the merits of the Examiner’s
obviousness rejection with respect to claims 8 and 9.
In view of the foregoing, we reverse the Examiner’s rejection of
claims 8 and 9 pro forma.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 8 and 9 under 35 U.S.C. § 112(b), for
indefiniteness.
The essence of the requirement under 35 U.S.C. § 112(b) is that the
language of the claims must make it clear what subject matter the claims
encompass — i.e., ‘“whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.’” Star Scientific,
Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011)
(quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986). In the present application, claim 8 recites “[a]n
application server, for use in Multimedia system according to claim 6
wherein said one or more processors is further programmed to . . ..” The
construction of the preamble of claim 8, and as a result claim 9 which
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depends from claim 8, raises issues with respect to 35 U.S.C. § 112(b) for at
least the reasons that follow.
We find claim 8 to be open to several different interpretations. For
example, claim 8 could be construed as a dependent claim, further limiting
the subject matter recited in claim 6 from which it depends. Alternatively
claim 8 could be interpreted as if it were an independent claim, incorporating
the multimedia system and processors recited in claim 6. The “application
server” recited in the preamble of claim 8 could be one and the same as the
“multimedia application server” recited in claim 6. However, it is not clear
if the “one or more processors” recited in claims 6 and 8 are intended to be
one and the same, especially since the recitation in both claims 6 and 8 of
the processors serve to perform duplicative functions, namely that of
determining, selecting, and personalizing.3 Conversely, “[a]n application
server, for use in Multimedia system according to claim 6” could be
construed according to its plain language as application server that is
intended to be used in the Multimedia system of claim 6, which according to
claim 6 comprises one or more processors. The body of claim 8 requires the
processors of claim 6 to perform certain functions. Under this construction,
the processors of claim 8 are components of the multimedia system of claim
6, not the application server of claim 8.
Therefore, based on various combinations of the interpretations just
discussed, the scope and meaning of the preamble of claim 8, which recites
“[a]n application server, for use in Multimedia system according to claim 6”
3 Only the function of “wherein the additional multimedia service is
presented on the communications device” recited in claim 6 is not recited as
one of the functions of the processors recited in claim 8.
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(claim 8 (emphasis added)), is not clear. In general, a preamble is construed
as a limitation “if it recites essential structure or steps, or if it is ‘necessary to
give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney
Bowes, Inc., 182 F.3d at 1305). And, a preamble is not limiting, however,
“‘where a patentee defines a structurally complete invention in the claim
body and uses the preamble only to state a purpose or intended use for the
invention.”’ Catalina Mktg. Int’l, Inc., 289 F.3d at 808 (quoting Rowe, 112
F.3d at 478); see also Symantec Corp. v. Computer Assocs. Int’l, Inc., 522
F.3d 1279, 1288 (Fed. Cir. 2008).
In one interpretation, where claim 8 is construed as dependent on
claim 6, the Examiner is correct (Ans. 6) that little weight, if any, should be
given to the inclusion of the “application server” recited in the preamble,
because the application server recited in the preamble of claim 8 is not tied
to any other element recited in (i) claim 8, or (ii) claim 6 from which claim 8
depends. See, e.g., Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and
intrinsically sets forth the complete invention, including all of its limitations,
and the preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim
limitation.”).
In the interpretation made by the Examiner, the “application server”
recited in the preamble of claim 8 is a different application server than the
“multimedia application server” recited in the preamble of claim 6 from
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which claim 8 depends (otherwise the application server in claim 8 would
have been recited as “the multimedia application server of claim 6” or
something to that effect). If Appellant intended to refer to the same
application server, then claim 8 is indefinite for failing to particularly point
out the invention. As a result, the application server recited in the preamble
of claim 8 is not connected to the body of either claims 6 or 8.
Another possible interpretation is that Appellant has defined a
structurally complete “Multimedia system” comprising “a multimedia
application server” and “one or more processors” in claim 6. Consequently,
the recitation of “[a]n application server, for use in Multimedia system”
amounts to a mere statement of intended use. And, again, the “Multimedia
system” recited in the preamble of claim 8 would thus lack antecedent basis
in claim 6 due to the failure to recite “the multimedia system recited in claim
6” or other equivalent language. Accordingly, consistent with the cited
precedents, such recitation would not be entitled to patentable weight since it
would be held only in the preamble and would not breathe life into the body
of claim 8.
Claim 8 currently recites “An application server, for use in Multimedia
system” (claim 8 (emphases added)). Therefore, claim 8 purports to recite a
different application server and multimedia system than the “multimedia
application server” and “Multimedia system” recited in independent claim 6.
In other words, if Appellant intends claim 8 to refer back to the application
server and/or multimedia system recited in claim 6, the application server
and multimedia system of claim 8 lack proper antecedent bases.
In addition, “[a]n [] intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
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context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use “can
be resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works,
868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry
involves examination of the entire patent record to determine
what invention the patentee intended to define and protect.
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
In the instant case, the application server recited in the preamble of
claim 8 is merely intended to be used in a multimedia system according to
claim 6 (and not necessarily the multimedia system recited in claim 6).
Under a plausible interpretation, then, claim 8 could be independent
because it does not further limit the system of claim 6, but rather recites a
related, yet distinct invention that is merely intended to be used with the
system of claim 6. Notably, the functions of the recited processor in both
claims are identical except for the additional multimedia service being
presented on the communications device in claim 6 (which is not in claim 8).
These common limitations arguably suggest that Appellant intended for
these claims to be independent; otherwise, these limitations would be
superfluous.
Notably, unlike the first articulated interpretation, the preamble in this
interpretation is limiting: it recites essential structure, namely a server which
has a definite structural meaning in the art, namely “[o]n the Internet or
other network, a computer or program that responds to commands from a
client.” Microsoft Computer Dictionary 474 (5th ed. 2002).
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That is, under this interpretation, the term “server” is not merely a
descriptive name or intended purpose of the invention: it is an essential
structural element of the invention. See Catalina Marketing Int 7, 289 F.3d
at 808 (internal quotation and citation omitted); see also Rowe v. Dr or, 112
F.3d 473, 478 (Fed. Cir. 1997) (noting that when the claim preamble recites
structural limitations of the claimed invention, the USPTO must give effect
to that usage).Because (i) of the aforementioned antecedent basis issues; and
(ii) the application server recited in claim 8 is not connected to or in
cooperation with any other limitation of either claims 6 and/or 8, we find
that claim 8 (and thus claim 9 by way of dependency) is subject to multiple
plausible interpretations, and is therefore indefinite. Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35U.S.C. § 112,
second paragraph, as indefinite.”)
Accordingly, we enter a NEW GROUND OF REJECTION against
dependent claims 8 and 9 under 35 U.S.C. § 112(b), as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1,2, 4—7, 12, and 13
as being obvious because (i) the Examiner properly interpreted
representative claim 1 as not requiring separate and different devices as the
“multimedia rendering device” and “communications device,” and (ii) the
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combination teaches or suggests the limitation at issue of “presenting the
additional multimedia service on the communication device” as recited in
representative independent claim 1.
(2) The Examiner did not err in rejecting claim 3 as being obvious
because Robotham teaches a mouse click which meets the recited request,
and a communications device that performs the recited functionality.
DECISION
The Examiner’s rejection of claims 1—7, 12, and 13 is affirmed.
The Examiner’s rejection of claims 8 and 9 is reversed pro forma.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 8 and 9 under 35 U.S.C. § 112(b).
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED-IN-PART: 37 C.F.R. § 41.50(T0
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